MENA: Establishing Bona Fide Use

This article focuses on the bona fide use requirement in the Middle East region, and how the practice differs from that of the US, beginning first with an overview of the statutory provisions on use in the local trademark laws – with an examination of the various procedural contexts in which this issue may arise.  The article will then move to address the different documentary evidence that may be taken into consideration when challenging an applicant’s use in administrative or court proceedings.

Statutory provisions and applicable practice on use

Use is not required for registration (with the exception of Algeria at the time of renewal). However, failure to use the trademark within a specific period of time will in principle subject a trademark registration to cancellation on the grounds of non-use. However, unlike the United States where a cancellation action is similar to an opposition action in applicable law, the situation is not the same in the Middle East. More specifically, administrative procedures for canceling a trademark are only available in few countries, namely Jordan and Oman. In the remaining countries, cancellation actions must be brought before the local courts, which can greatly increase the time, costs and even predictability of such proceedings.

Another issue to take note of with regards to cancellation due to non-use is the issue of the burden of proof. In most countries, the burden of proof in a cancellation proceeding is usually on the plaintiff in order to prove that the registered trademark should not be registered. This of course renders non-use cancellation actions expensive since a negative, namely, that a mark is not in use, must be proven.

Standards of use

Notwithstanding the complicated legal proceedings of a non-use cancellation action, it will be important to establish valid and genuine use in the countries of the Middle East. It will be necessary for the trademark to be directly used by the sale of goods bearing the trademark (or rendering of services under the trademark, as the case may be). Other standards of use are available but are not clearly defined in the underlying laws and regulations.

In fact, the body of case law adjudicating the issue of a bona fide use does not clearly shed light on the types of affirmative activities and explanations for the absence of active plans that will be deemed sufficient proof of a bona fide use, either in a summary judgment motion or at a trial. We can at least list out the activities that could be deemed indicative of the presence of a bona fide use including:

• conducting a trademark availability search;
• performing preparatory graphic design work or labeling on sales material for the products;
• using the mark in international jurisdictions;
• testimony regarding informal, unwritten business plans or market research;
• obtaining necessary regulatory permits;
• obtaining a correlative domain name for the mark or setting up a website;
• making contacts with individuals who might help develop a business;
• correspondence mentioning the planned use of the mark in the country;
• attempts to find licensees in the country;
• having a credible marketing reason for deferring product introduction (US sanctions)

We obviously can rely on all of the aforementioned in our defense but the outcome is definitely not conclusive. Therefore, the question of valid use can only be tackled from a practical perspective, meaning that the answer to what constitutes valid use should never be considered as definite and exhaustive.